Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
DETAILED ACTION
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claim limitation “HERatio encryption subsystem that encrypts”, “a ciphertext send subsystem that sends”, “a HERatio decryption subsystem that decrypts “ “a homomorphic computation subsystem that homomorphically computes “ an intermediary ciphertext send subsystem that sends “ has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “subsystem” coupled with functional language “encrypt, decrypt, send, compute” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) 6-10 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: Para. 0131 of the published specification states “ A subsystem of the computer system, in whole or in part, may be assigned to a particular hardware implemented system, such as a dedicated Application Specific Integrated Circuit (ASIC) or Field Programmable Gate Array (FPGA).”
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. an abstract idea) without significantly more.
Step 1: This part of the eligibility analysis evaluates whether the claim falls within any statutory category. See MPEP 2106.03. The claims recites a method and system. These are directed to a series of steps or acts, and machine, and falls within one of the statutory categories of invention. (Step 1: YES).
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception or whether the claim is “directed to” the judicial exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
Claim 1 and 6 are directed to an abstract idea because the following claim limitations recite an abstract idea:
A method and machine comprising :
Encrypting/decrypting a rational number into a corresponding ciphertext using a modified Brakerski, Fan, and Vercauteren (BFV) homomorphic encryption scheme wherein classical polynomial rings in BFV homomorphic encryption are replaced by Laurent polynomial rings; (mental process/mathematical concepts: a human-being performing mathematical calculations and applying algebraic formulas to encode/decode numerical information);
Claims 1 and 6 recites the following additional elements:
Wherein the method is “for Homomorphic Encryption (HE) of Rational data (HERatio) built upon Brakerski, Fan, and Vercauteren (BFV) homomorphic encryption for homomorphic encrypted data transmission”
Wherein the machine is a “HERatio system”
A source computing device comprising a HERatio encryption subsystem;
A destination computing device comprising a HERatio decryption subsystem;
Sending by said source computing device and a ciphertext send subsystem that sends said at least one ciphertext to said destination computing device.
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception or whether the claim is “directed to” the judicial exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.
The claims fails to achieve a technical solution to a technical problem. Thus the claim fail to provide an improvement to the function of a computer or to a technology itself. The claim culminate with encrypting and decrypting a numerical value using a mathematical formula. See MPEP 2106.04(d)(1) and 2106.05(a). The additional elements are recited at a high level of generality and amount to merely using computers as a tool to implement the abstract idea. Thus the additional elements are considered mere instruction to apply the abstract idea See MPEP 2106.05(f). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application (Step 2A, Prong Two: NO), and the claim is directed to the judicial exception. (Step 2A: YES).Therefore, the examiner must find that the claims fail to integrate the abstract idea into a practical application
.
Step 2B:
This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05.
One way to determine integration into a practical application is when the claimed invention improves the functioning of a computer or improves another technology or technical field. To evaluate an improvement to a computer or technical field, the specification must set forth an improvement in technology and the claim itself must reflect the disclosed improvement. See MPEP 2106.04(d)(1) and 2106.05(a).
Likewise to step 2A prong 2, the claims fails to achieve a technical solution to a technical problem. Thus the claim fail to provide an improvement to the function of a computer or to a technology itself. The claim culminate with encrypting and decrypting a numerical value using a mathematical formula. See MPEP 2106.04(d)(1) and 2106.05(a). The additional elements are recited at a high level of generality and amount to merely using computers as a tool to implement the abstract idea. Thus the additional elements are considered mere instruction to apply the abstract idea See MPEP 2106.05(f). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application (Step 2A, Prong Two: NO), and the claim is directed to the judicial exception. (Step 2A: YES).Therefore, the examiner must find that the claims fail to amount to significantly more than the abstract idea itself, even when the additional elements are considered alone and in combination with the abstract idea. (Step 2B: NO).
Therefore, the claims are directed to an abstract idea without significantly more and are unpatentable.
Claim 4 and 9
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception or whether the claim is “directed to” the judicial exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
Claim 4 and 9 are directed to an abstract idea because the following claim limitations recite an abstract idea:
Homomorphically computing at least one arithmetic function with said ciphertext to obtain a result ciphertext; (mental process/mathematical concepts: a human-being performing mathematical operations on encoded data.);
Decrypting said result ciphertext into a result rational number. (mental process/mathematical concepts: a human-being applying an arithmetic formula to decode a numerical output);
Claims 4 and 9 recites the following additional elements:
an intermediary computing device and a homomorphic computation subsystem;
sending said ciphertext to an intermediary computing device;
sending said result ciphertext to said destination computing device.
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception or whether the claim is “directed to” the judicial exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.
The claims fails to achieve a technical solution to a technical problem. Thus the claim fail to provide an improvement to the function of a computer or to a technology itself. The claim culminate with encrypting and decrypting a numerical value using a mathematical formula. See MPEP 2106.04(d)(1) and 2106.05(a). The additional elements merely constitutes insignificant extra-solution data gathering and post-solution activity. See MPEP 2106.05(f) and 2106.05(g). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application (Step 2A, Prong Two: NO), and the claim is directed to the judicial exception. (Step 2A: YES).Therefore, the examiner must find that the claims fail to integrate the abstract idea into a practical application.
Step 2B:
This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05.
One way to determine integration into a practical application is when the claimed invention improves the functioning of a computer or improves another technology or technical field. To evaluate an improvement to a computer or technical field, the specification must set forth an improvement in technology and the claim itself must reflect the disclosed improvement. See MPEP 2106.04(d)(1) and 2106.05(a).
Likewise to step 2A prong 2, the claims fails to achieve a technical solution to a technical problem. Thus the claim fail to provide an improvement to the function of a computer or to a technology itself. The claim culminate with encrypting and decrypting a numerical value using a mathematical formula. See MPEP 2106.04(d)(1) and 2106.05(a). The additional elements merely constitutes insignificant extra-solution data gathering and post-solution activity. See MPEP 2106.05(f) and 2106.05(g). +Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application (Step 2A, Prong Two: NO), and the claim is directed to the judicial exception. (Step 2A: YES).Therefore, the examiner must find that the claims fail to amount to significantly more than the abstract idea itself, even when the additional elements are considered alone and in combination with the abstract idea. (Step 2B: NO).
Therefore, the claims are directed to an abstract idea without significantly more and are unpatentable.
Claims 2, 3, 5, 7, 8 and 10
Regarding claims 2, 3, 5, 7, 8 and 10 the following claim limitations recites an abstract idea
wherein said classical polynomial rings in BFV homomorphic encryption are represented as
Z
x
/
Φ
2
n
Z
[
x
]
and said Laurent polynomial rings are represented as
Z
x
±
1
/
Φ
2
n
Z
[
x
±
1
]
. ( mental process/mathematical concept: mathematical formula .)
wherein computation of said Laurent polynomial rings includes computing a bounded base-b expansion of said at least one rational number and replacing b by unknown variable x.. (mental process/mathematical concept: a human being manually performing polynomial expansions and algebraic variable substitutions.)
wherein said at least one arithmetic function is at least one of a group of arithmetic functions chosen from: addition, subtraction, and multiplication. (mental process/mathematical concept: a human being performing basic arithmetic operations.)
Claims 2, 3, 5, 7, 8 and 10 recites the additional elements:
none
Step 2A, Prong 2 and Step 2B
Claims 2, 3, 5, 7, 8 and 10 fail to recite any new additional elements relative to base claims 1 and 6. Thus, the analysis and findings for step 2A, prong 2 and step 2B incorporates the analysis and findings of claims 1 and 6 however, the analysis and findings includes consideration of claims 1 and 6 as a whole. Therefore, claims 2, 3, 5, 7, 8 and 10 are directed to an abstract idea without significantly more and is unpatentable.
Claim Objections
Claims 1, 6 and 9 are objected to because of the following informalities:
Claim 1 is objected to for the phrase “an instance of an instance of a modified BFV homomorphic encryption” is in an unclear form and should be amended to include “scheme” at the end or use other clear terminology consistent with claim 6.
In regards to claim 6, the claim recites “said source device” however the claim previously introduced “source computing device.” Applicant should amend the claim for consistent terminology usage.
In regards to claim, the phrase “at least one result rational” appears to be missing the term “number.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The test for determining if Appellants' Specification complies with the enablement requirement of 35 U.S.C. §112(a) is whether one skilled in the art, having read the specification, could practice the invention without “undue experimentation.” In re Wands, 858 F.2d 731,736-37 (Fed. Cir. 1988); see Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999).
Specifically, the controlling court has stated: In re Wands, set forth a number of factors which may be considered in determining whether a disclosure would require undue experimentation. These factors were set forth as follows:
(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Id. at 737, 858 F.2d 731,8 USPQ2d at 1404.
The Examiner also notes that all of the factors need not be reviewed when determining whether a disclosure is enabling. See Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213, 18 USPQ2d 1016, 1027 (Fed.Cir.1991) (noting that the Wands factors “are illustrative, not mandatory. What is relevant depends on the facts . . . .”). Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999).
In particular, we review whether the novel aspects of Appellants' purported invention are enabled in the Specification. See Auto.Tech. Int' l., 501 F.3d at 1283 (“Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent.”); Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997) (“It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.”).
Independent claim 1 recites encrypting at least one ration number into a corresponding ciphertext using a modified Brakerski, Fan, and Vercauteren (BFV) homomorphic encryption scheme and decrypting the ciphertext into the rational number. Independent claim 6 recites a corresponding system that encrypts at least one rational number into a ciphertext and decrypts the ciphertext into the rational number. However, the specification describes a much narrower implementation. The disclosed HERatio process requires preprocessing to compute a bounded base-b expansion of a rational number and replace b with x to obtain a Laurent polynomial. The specification also describes truncation, approximation, exponent-range limits and coefficient overflow restrictions. Thus the disclosed implementation is not simply unrestricted encryption and exact decryption on any rational number, instead there is a dependency on converting the rational number into a Laurent polynomial representative and satisfying certain correctness conditions.
The independent claims do not recite any of these limitations, for example claims 1 and 6 do not require generating a Laurent polynomial representative of the rational number, computing a bounded base-b expansion, truncating the expansion if necessary, selecting an exponent range, evaluating the decoded Laurent polynomial at b, recovering an approximation within a selected precision, avoiding coefficient overflow modulo t or selecting parameters so that the desired circuit remains within the allowable Laurent polynomial range.
The claim covers more than the disclosed enabled implementation. As written, the claims covers encryption and decryption of rational numbers using modified BFV scheme without limiting the process to disclosed bounded base-b polynomial representation or the stated correctness conditions. A person of ordinary skill would have to determine without sufficient guidance from the claims and without recited limits when the claimed encryption/decryption process would accurately recover the rational number, when it merely recovers an approximation and what parameter restrictions are necessary for correctness.
Accordingly, undue experimentation would be required to practice the full scope of the claims 1 and 6. Clams 2-5 and 7-10 depend from those claims and do no cure the deficiency. For example, claim 3 and 8 recite bounded base-b expansion and replacing b with x, but do not recite the truncation, approximation, exponent range or the coefficient overflow limits necessary for correctness. Claims 4, 5, 9 and 10 recite homomorphic arithmetic but do not limit the arithmetic operations to cases where the result remains within the disclosed allowable Laurent polynomial range and avoids coefficient overflow.
Accordingly, the Examiner concludes that Applicant' s disclosure does not satisfy the enablement requirement with respect to encrypting at least one ration number into a corresponding ciphertext using a modified Brakerski, Fan, and Vercauteren (BFV) homomorphic encryption scheme and decrypting the ciphertext into the rational number because a person of ordinary skill in the art could not determine how to implement the invention without undue experimentation.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification describes a HERatio implementation in which rational numbers are represented by bounded base-b Laurent polynomial representatives and in which correctness depends on stated limits. However, claims 1 and 6 are drafted more broadly and do not require these features. The claims therefore cover encryption/decryption of rational numbers using modified Brakerski, Fan, and Vercauteren (BFV) homomorphic encryption scheme without requiring the disclosed preprocessing and correctness limit that appear necessary to the described implementation.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 4 and 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 3 and 8, the limitation “computation of said Laurent polynomial rings includes computing a bounded base-b expansion of said at least one rational number and replacing b by unknown variable x” renders the claim indefinite. Specifically, a “Laurent polynomial ring” is an algebraic structure and the statement that the “computation of said Laurent polynomial rings includes computing a bounded base-b expansion of said at least one rational number and replacing b by unknown variable x” appears to generate a Laurent polynomial representative or plaintext element and does not compute the ring itself. Thus it is unclear as to whether the claim requires constructing the ring, generating Laurent polynomial representative or performing computations within the ring.
In regards to claim 4, the limitation “unencrypted forms of said at least one ciphertext and said at least one additional ciphertext” is unclear because a ciphertext itself does not have an “unencrypted form.” It is unclear whether the limitation refers to the original rational numbers encrypted to produce the ciphertexts, the Laurent polynomial representative corresponding the ciphertext, the decrypted values obtained from the ciphertexts or some other values.
Dependent claims are rejected for inheriting the rejections from which they depend.
Allowable Subject Matter
Claim(s) 1-10 would be allowable if amended to overcome the 35 USC 101, 112(a) and 112(b) rejections, set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER C HARRIS whose telephone number is (571)270-7841. The examiner can normally be reached Monday through Friday between 8:00 AM to 4:00 PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey L Nickerson can be reached on (469) 295-9235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER C HARRIS/Primary Examiner, Art Unit 2432
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